DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of Group I Species B (claims 27-32) in the reply filed on February 27, 2026 is acknowledged.
The traversal of the group restriction is on the ground(s) that there is no serious search burden since the subject matter is not independent and distinct and that separate classifications is not grounds for restriction. This is not found persuasive because as set forth in the Office action of January 5, 2026 the groups are related as combination subcombination. Inventions related as combination and subcombination are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because it could be built using a parallel plate electrostriction driver. The subcombination has separate utility such as in a LIDAR scanner, welding/sintering, 3D-printing or an HMD using a surface emitting laser. The examiner’s reasons for restriction were not only that the inventions had acquired a separate status in the art in view of their different classification but also included the fact that the subject matter is divergent and would require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
The requirement is still deemed proper and is therefore made FINAL.
Regarding applicant’s regarding the species restriction, the examiner is persuaded. Particularly, upon further consideration, the examiner agrees that, despite being mutually exclusive, the species are obvious variants of each other and the species restriction requirement is withdrawn.
For clarity claims 27-32 of Group I are examined below and claims 33-41 are considered withdrawn.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Examiner’s Comments
The examiner notes that applicant has provided a special definition of " ellipse” and “elliptical” in the specification paragraph [0053] states:
Herein, the terms “ellipse” and “elliptical” refer to non-circular ellipses and non-circular elliptical shapes. That is, an elliptical light beam or elliptical mirror, as defined herein, has a diameter along its major axis that is greater than the diameter along its minor axis.
Normally all circles and circular shapes would be considered to be a special case of an ellipse or an elliptical shape. However, applicant has disavowed the full scope of the term by eliminating circle and circular ellipses (with the same axis length in all directions) from a broader interpretation of ellipse and elliptical. Applicant has assigned this special meaning to the term that is "sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention" Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477, 45 USPQ2d 1429, 1432 (Fed. Cir. 1998). Therefore, this definition will control interpretation of the term as it is used in the claim. Toro Co. v. White Consolidated Industries Inc., Fed. Cir. 1999; see MPEP 2111.01.IV.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 30 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Regarding claim 30 “wherein major axes of the elliptical mirror plate of the first MEMS mirror and of the elliptical cross-section of the light beam are longer than their respective minor axes” fails to further limit the invention of claim 27. As noted above applicant acts as their own lexicographer and in paragraph [0053] explicitly provides a definition of ellipse and elliptical that controls interpretation of the terms as it is used in the claim. The body of the claim substantially repeats definitions without adding any limitation to the elliptical mirror plate or the elliptical cross-section of the light beam. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 27-31 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Bella US Patent Application Publication 2021/0396990.
Regarding claim 27 Bella discloses a micro-electromechanical system (MEMS) mirror (title e.g. figure 3 MEMS device 300) comprising: an elliptical mirror plate (e.g. mirror 12 & paragraph [0078] “Those skilled in the art will appreciate that the shape of the mirror 12 can be any shape desired for a particular application, e.g., a circle, ellipse, square, rectangle or other shape as desired” e.g. paragraph [0078] gives an example of D1=5mm and D2=1.7mm) configured to oscillate (axiomatic e.g. paragraph [0076] “mirror body 20 can oscillated about the rotation axis 13”) about a rotational axis (e.g. rotation axis 13); two rotors coupled to the elliptical mirror plate (e.g. figure 4F mirror body interface 30b); a first (e.g. figure 3 left side) stator (e.g. figure 4F actuator structures 50) that is disposed on a substrate (paragraph [0086] “50 provided and integrated with semiconductor substrate”) and that is capacitively coupled to the two rotors (paragraph [0064] notes MEMs driver 25 “… using a change in capacitance in a comb-drive rotor and stator of an actuator structure used to drive the MEMS mirror 12”); and a second (e.g. figure 3 right side) stator (e.g. 50) that is disposed on the substrate (paragraph [0086]) and that is capacitively coupled to the two rotors (paragraph [0064]), wherein the first stator and the second stator are configured to drive an oscillation of the elliptical mirror plate (paragraph [0064, 0068 & 0086] “the actuator structures 50 may by a comb drives that include mirror combs attached to the mirror body 20 interleaved with frame combs attached to the frame 40. Applying a difference in electrical potential between interleaved mirror combs and frame combs creates a driving force between the mirror combs and the frame combs, which creates a torque on the mirror body 20 about the rotation axis 13”).
Regarding claim 28 Bella discloses the MEMS mirror of claim 27, as set forth above. Bella further discloses wherein the first stator (e.g. left 50) comprises a first plurality of comb drivers (e.g. see figure 3), the second stator (e.g. right 50) comprises a second plurality of comb drivers (e.g. see figure 3), and the first plurality of comb drivers and the second plurality of comb drivers are configured to drive the oscillation of the elliptical mirror plate (paragraph [0064, 0068 & 0086] “actuator structure includes interdigitated finger electrodes made of interdigitated mirror combs and frame combs to which a drive voltage (i.e., an actuation or driving signal) is applied by the MEMS driver … The drive voltage applied to the finger structure generates a corresponding capacitance. The drive voltage across the finger structure creates a driving force between interdigitated mirror comb electrodes and the frame comb electrodes, which creates a torque on the mirror body 20 about the rotation axis”).
Regarding claim 29 Bella discloses the MEMS mirror of claim 28, as set forth above. Bella further discloses it is further comprising: at least two torsional bars (e.g. central support beams 31) configured to couple the two rotors to the substrate such that the elliptical mirror plate is suspended from the at least two torsional bars (see figure 3).
Regarding claim 30 Bella discloses the MEMS mirror of claim 27, as set forth above. Bella further discloses wherein a major axis (e.g. D1) of the elliptical mirror plate is longer than a minor axis (e.g. D1) of the elliptical mirror plate (definition, further paragraph [0004] “an elliptical mirror, the longest diameter corresponds to the length of the major axis” e.g. paragraph [0078] gives an example of D1=5mm and D2=1.7mm).
Regarding claim 31 Bella discloses the MEMS mirror of claim 27, as set forth above. Bella further discloses wherein the major axis (e.g. D1) of the elliptical mirror plate (e.g. 12) is substantially orthogonal to a rotational axis (e.g. 13) of the elliptical mirror plate (e.g. see figure 3).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Bella US Patent Application Publication 2021/0396990.
Regarding claim 32 Bella discloses the MEMS mirror of claim 31, as set forth above. Bella further discloses an example ratio of the minor axis (e.g. D2) to major axis (e.g. D1) is ~1/3 (e.g. paragraph [0078] gives an example of D1=5mm and D2=1.7mm), and further discloses the dimension may be increased or decreased based on application.
Bella does wherein the minor axis of the elliptical mirror plate is approximately half as long as the major axis of the elliptical mirror plate. However, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955), see MPEP 2144.05. In this case Bella has a MEMS reflector with an elliptical mirror plate oscillated by comb drivers, fulfilling the general conditions of the claim. One would be motivated to modify the relative sizes of the ellipse axes based on the application, as taught by Bella (paragraph [0078]), e.g. based on input beam size/shape and desired spread angle. Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention for the system as disclosed by Bella to have the minor axis of the elliptical mirror plate is approximately half as long as the major axis of the elliptical mirror plate for the purpose of having the mirror appropriately sized for a particular application as taught by Bella and since discovering the optimum or workable ranges involves only routine skill in the art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 27-32 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10-13, 15 and 17 of U.S. Patent No. 11,971,556. Although the claims at issue are not identical, they are not patentably distinct from each other because MEMS claimed by the instant application is included/incorporated in the systems claimed by ‘556.
Instant application
11,971,556
27. A micro-electromechanical system (MEMS) mirror comprising:
an elliptical mirror plate configured to oscillate about a rotational axis;
two rotors coupled to the elliptical mirror plate;
a first stator that is disposed on a substrate and that is capacitively coupled to the two rotors; and
a second stator that is disposed on the substrate and that is capacitively coupled to the two rotors, wherein the first stator and the second stator are configured to drive an oscillation of the elliptical mirror plate.
1. A system comprising: an optical engine configured to emit a light beam having an elliptical cross-section; a first micro-electromechanical system (MEMS) mirror comprising an elliptical mirror plate and being configured to oscillate the elliptical mirror plate to reflect the light beam along a first scanning axis; at least one shaping lens configured to receive the light beam reflected from the elliptical mirror plate and reshape the light beam to have a substantially circular cross-section; and a second MEMS mirror configured to scan the light beam having the substantially circular cross-section along a second scanning axis different from the first scanning axis.
10. The system of claim 1, wherein the first MEMS mirror comprises:
the elliptical mirror plate configured to oscillate about a rotational axis;
two rotors coupled to the elliptical mirror plate;
a first stator that is disposed on a substrate and that is capacitively coupled to the two rotors; and
a second stator that is disposed on the substrate and that is capacitively coupled to the two rotors, wherein the first stator and the second stator are configured to drive the oscillation of the elliptical mirror plate.
28. The MEMS mirror of claim 27, wherein the first stator comprises a first plurality of comb drivers, the second stator comprises a second plurality of comb drivers, and the first plurality of comb drivers and the second plurality of comb drivers are configured to drive the oscillation of the elliptical mirror plate.
11. The system of claim 10, wherein the first stator comprises a first plurality of comb drivers, the second stator comprises a second plurality of comb drivers, and the first plurality of comb drivers and the second plurality of comb drivers are configured to drive the oscillation of the elliptical mirror plate.
29. The MEMS mirror of claim 28, further comprising: at least two torsional bars configured to couple the two rotors to the substrate such that the elliptical mirror plate is suspended from the at least two torsional bars.
12. The system of claim 11, further comprising: at least two torsional bars configured to couple the two rotors to the substrate such that the elliptical mirror plate is suspended from the at least two torsional bars.
27. A micro-electromechanical system (MEMS) mirror comprising:
an elliptical mirror plate configured to oscillate about a rotational axis;
two rotors coupled to the elliptical mirror plate;
a first stator that is disposed on a substrate and that is capacitively coupled to the two rotors; and
a second stator that is disposed on the substrate and that is capacitively coupled to the two rotors, wherein the first stator and the second stator are configured to drive an oscillation of the elliptical mirror plate.
13. A system comprising:
an optical engine configured to emit an elliptical light beam;
a first micro-electromechanical system (MEMS) mirror comprising an elliptical mirror plate and being configured to receive the elliptical light beam and to oscillate the elliptical mirror plate to reflect the elliptical light beam along a first scanning axis;
at least one shaping lens configured to receive the elliptical light beam reflected from the first MEMS mirror and configured to reshape the elliptical light beam to have a substantially circular cross-section to produce a circular light beam;
a second MEMS mirror configured to scan the circular light beam along a second scanning axis that is different from the first scanning axis; and
a controller configured to control a timing of emission of the elliptical light beam from the optical engine for modulating the elliptical light beam to be perceived as images when output at an output of the system.
31. The MEMS mirror of claim 30, wherein the major axis of the elliptical mirror plate is substantially orthogonal to a rotational axis of the elliptical mirror plate.
15. The system of claim 13, wherein a major axis of the elliptical mirror plate is substantially orthogonal to an axis of rotation of the elliptical mirror plate.
32. The MEMS mirror of claim 27, wherein the minor axis of the elliptical mirror plate is approximately half as long as the major axis of the elliptical mirror plate.
17. The system of claim 13, wherein a minor axis of the elliptical mirror plate is approximately half as long as a major axis of the elliptical mirror plate.
Regarding claim 1 of the instant application – ‘556 claim 10 claims the same structure as instant application claim 1, thus despite being incorporated into a larger invention all of the features of the MEMS of claim 1 are already claimed by ’556. Regarding instant application claim 1 and claim 13 of ‘556 – claim 13 has a similar MEMS in a larger system, and while the MEMS in claim 13 is more broadly claimed it necessarily cover the more narrowly claimed MEMS of instant application claim 1. Regarding instant application claims 28-29 and 31-32 – ‘556 claims 11-12, 15 and 17, respectively, have identical language. Regarding claim 30, the claim is a definition set forth by the specification of both the instant application and ‘556, that inherently is included in the “elliptical” limitation of instant application claim 1 and ‘556 claims 10 and 13.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Darrer US Patent Application Publication 2022/0043254; in regards to a similar MEMS, see abstract and figure 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to George G King whose telephone number is (303)297-4273. The examiner can normally be reached 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at (571) 272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/George G. King/Primary Examiner, Art Unit 2872 March 9, 2026